Appeal 2007-1893
Application 10/946,753
enablement – a presumption based on the state of the art and the nature of
the invention.
Since the skilled artisan, in our view, would have reasonably
employed conventional techniques to direct the nanotube growth in Shin, we
need not address the question of whether, absent such known techniques,
Shin’s directed growth would be possible without experimentation, let alone
undue experimentation.
Turning now to the merits of the rejection, we find that Shin amply
discloses the limitations of representative claim 1. At the outset, we note
that claim merely calls for the topological structure to control at least one of
the length and orientation of the nanostructures. That is, the claim does not
require both length and orientation to be controlled, but rather just one such
characteristic. In any event, we find the topological structure in Shin
reasonably discloses controlling both length and orientation.
First, we agree with the Examiner that the sidewall of aperture 16 in
Shin reasonably constitutes a “topological structure” – an interpretation that
is indeed undisputed.8 Also, given the scope and breadth of the term
“orientation,” we find that the topological structure, at least in part, controls
the orientation of the grown nanostructures.9
8 See, e.g., Br. at 10 (arguing that “the topological structure (e.g., aperture
16) of Shin fails to control the orientation of the nanotubes”) (emphasis
added).
9 We further note that Appellants apparently recognize that the nanotube
orientations are controlled in Shin. See, e.g., Reply Br., at 7 (“[E]ven
assuming that the nanotube orientations are sufficiently controlled so as to
meet each other as illustrated by Shin….”).
7
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